Publicly disclosing a new technology, potentially an invention, before a patent application has been filed – whether purposely or accidentally – can jeopardise patent coverage, and consequently commercialisation, of the technology. But there are options available in the event of self-disclosure. Craig Don Paul and Malcolm Lyons explain why all researchers and inventors need to know about grace periods.
A commonly heard story, mainly from those involved in academic commercialisation offices, involves the good-hearted researcher who has created new technology, but has not appreciated that the technology is also an invention, before disclosing the technology publicly.
Although unfortunate from a commercial perspective, this is understandable in universities and research institutes where, as expected for an academic researcher, knowledge is disseminated. Only after some time and consideration does the researcher approach the commercialisation office asking, ‘Is my technology a patentable invention?’ Unfortunately, the researcher’s prior disclosure may have fatal consequences for a patent application covering the technology.
But it’s important to know that there are options available in the event of disclosure, including self-disclosure – namely in the form of grace periods.
What are grace periods?
Across the globe, certain countries make it possible, through the use of grace periods, to file a patent application validly after disclosure of a new technology. Without grace periods, such disclosure would render the technology unpatentable, because it would no longer be novel.
The rules around grace periods vary from country-to-country, both in terms of the time available to file an application after disclosure, and the supporting materials required.
Grace periods can also relate to various types of disclosures, for example, reasonable trial or experimentation, or display at a recognised exhibition. In the table below, however, we limit our consideration to self-disclosures and the availability and requirements of grace periods in some important jurisdictions, including Australia and New Zealand.
| Jurisdiction | Period | Type of application | Requirements | Notes |
|---|---|---|---|---|
| Australia | 12 months | Non-provisional, including PCT | Assert during prosecution | |
| New Zealand | 12 months | Non-provisional, including PCT | Assert during prosecution | Self-disclosure on or after on 30 December 2018. |
| USA | 12 months | Provisional or Non-provisional, including PCT | Assert during prosecution | |
| Canada | 12 months | Non-provisional, including PCT | Assert during prosecution | |
| Japan | 12 months | Non-provisional | Actively apply at filing. Provide supporting documents* | Self-disclosure on or after 9 December 2017. Supporting documents to be provided within 30 days of applying. |
| Malaysia | 12 months | Non-provisional, including PCT | Actively apply at filing. Provide supporting documents* | |
| Taiwan | 12 months | Non-provisional | Assert during prosecution | Not a member of the Patent Co-operation Treaty. |
| Singapore | 12 months | Non-provisional, including PCT | Actively apply at filing. Provide supporting documents* | |
| Germany | 6 months | Utility | Actively apply at filing. Provide supporting documents* | Supporting documents to be provided within 30 days of applying. Utility patent has 10-year term and is not available for processes. |
| United Kingdom | N/A | UK may join Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which requires 12 m grace period, but conflicts with EPC. | ||
| Europe | N/A | |||
| India | N/A | |||
| China | N/A | |||
| Hong Kong | N/A |
What is self-disclosure?
In this context, a self-disclosure is a disclosure of a technology made by, or with the consent of, a potential patent applicant or patentee, prior to filing a patent application covering the technology. This often occurs via journal publications, including “as accepted”/ pre-print publications, conference proceedings, including oral and poster presentations, clinical trial publications, including mandatory clinical trial registration, marketing, or even promotions for raising capital. In many circumstances, because of the nature of the environment, particularly academic research, consent is implicit rather than explicit.
How to take advantage of grace periods?
To enliven the grace period in a particular jurisdiction, a patent application must be filed in that jurisdiction within a relevant time-period following the self-disclosure (see table above for timings).
Depending on the jurisdiction, the application may be provisional, non-provisional (referred to as “complete” in Australia and New Zealand), including PCT, or an application for a utility patent, which is a lower level patent. Generally, the application must be filed within 6 or 12 months from the date of the disclosure.
Remember, each country has different grace period requirements. A patent attorney can assist with navigation through the complex global patent landscape.
Key takeaways:
- Even in the event of self-disclosure, researchers can still secure patent coverage of their technology in some countries through the use of grace periods.
- Grace periods should only be relied on as a last resort. Before any disclosure of new technology, researchers should always submit that technology for review by their commercialisation office. The commercialisation office, together with its patent attorney, will be able to guide the researcher on filing a patent application – and when public disclosure can be made subsequently.
- If you do not have access to a commercialisation office, please contact Griffith Hack for advice
- before making any public disclosure of your technology, or
- immediately if a public disclosure of your technology has been made.
Our patent attorneys will be able to provide you with advice and guidance to ensure the patentability of your technology is not jeopardised.
